Reasoning
The Board first examined the relationship between the TRIPS Agreement and the EPC. [6] It confirmed that the TRIPS Agreement could not be directly applied to the EPC, [6] but thought it appropriate to take the TRIPS Agreement into consideration, since it "gives a clear indication of current trends". [7] The Board considered that "it is the clear intention of TRIPS [and in particular Art. 27(1) TRIPS [8] ] not to exclude from patentability any inventions, whatever field of technology they belong to, and therefore, in particular, not to exclude programs for computers". [7]
The Board however pointed out that "the only source of substantive patent law for examining European patent applications [at that moment was] the European Patent Convention". [9] The Board therefore considered Art. 52(2) and (3) EPC and concluded that the combination of Art. 52(2) and (3) EPC (exclusion of computer programs, but only when the application relates to computer programs "as such") "demonstrates that the legislators did not want to exclude from patentability all programs for computers". [10]
The Board then endeavored to determine the meaning of the expression "as such" in Article 52(3) EPC. [11] It concluded that, if a computer program has a technical character, it should be considered patentable, since the technical character of an invention is generally accepted as an essential requirement for its patentability, [12] In other words, "having technical character means not being excluded from patentability under the "as such" provision pursuant to Article 52(3) EPC." [13]
Technical character
The Board next held that
- "[for] the purpose of interpreting the exclusion from patentability of programs for computers under Article 52(2) and (3) EPC, ... programs for computers cannot be considered as having a technical character for the very reason that they are programs for computers". [14]
otherwise, since all computer programs are suitable to run on a computer, no distinction could be made between, on the one hand, computer programs with a technical character and, on the other hand, computer programs as such. [15] In other words, the mere fact that an invention is a computer program is not a sufficient reason to conclude that it has a technical character, when interpreting these legal provisions.
The technical character of computer programs, in view of these provisions, was found by the Board in the "further effects deriving from the execution (by the hardware) of the instructions given by the computer program", where these further effects have a technical character. [16] An invention which brings about a technical effect may be considered to be an invention. [16] A computer program must be considered to be invention within the meaning of Art. 52(1) EPC if it produces a technical effect. [17]
Elaborating more on the further technical effect, the Board held that "a computer program product may ... possess a technical character because it has the potential to cause a predetermined further technical effect." [13] Therefore "computer programs products are not excluded from patentability under all circumstances". [13]
To summarize, the Board held that:
- "a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run". [18]
The Board also took the view that
- "it does not make any difference whether a computer program is claimed by itself or as a record on a carrier". [18]
Remittal
The case was then remitted to the first instance, i.e. the Examining Division, for further prosecution, and "in particular for examination of whether the wording of the ... claims [avoided] exclusion from patentability under Article 52(2) and (3) EPC." [19]
Opinion on the contribution approach
The Board also used the opportunity to state that "determining the technical contribution an invention achieves with respect to the prior art is ... more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3)." [20] This was later emphasized in decisions T 931/95 and T 258/03.
A software patent is a patent on a piece of software, such as a computer program, libraries, user interface, or algorithm.
The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.
There are two provisions in the regulations annexed to the Patent Cooperation Treaty (PCT) that relate to the search and examination of patent applications concerning computer programs. These two provisions are present in the PCT, which does not provide for the grant of patents but provides a unified procedure for filing, searching and examining patent applications, called international applications. The question of patentability is touched when conducting the search and the examination, which is an examination of whether the invention appears to be patentable.
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the invention is novel and non-obvious. Together with criteria such as novelty, inventive step or nonobviousness, utility, and industrial applicability, which differ from country to country, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.
There are four overriding requirements for a patent to be granted under United Kingdom patent law. Firstly, there must have been an invention. That invention must be novel, inventive and susceptible of industrial application.
G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.
T 931/95, commonly known as Pension Benefit Systems Partnership, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 8, 2000. At the time, it was a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) but has now largely been superseded by the decisions in T 641/00 and T 258/03.
T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) which built on the principles suggested by the same Board in T 641/00. This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s technical character and inventive step.
Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved GB 2171877 granted to Aerotel Ltd and their infringement action against Telco Holdings Ltd and others. The second case concerned GB application 2388937 filed by Neal Macrossan but refused by the UK Patent Office.
T 641/00, also known as Two identities/COMVIK, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 26, 2002. It is a landmark decision regarding the patentable subject matter requirement and inventive step under the European Patent Convention (EPC). More generally, it is a significant decision regarding the patentability of business methods and computer-implemented inventions under the EPC.
The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.
Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.
Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is Article 56 EPC. That is, an invention, having regard to the state of the art, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO) have developed an approach, called the "problem-and-solution approach", to assess whether an invention involves an inventive step.
Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.
Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which also applies also in other jurisdictions.
Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."
